Order of 1 Oct 2019, C-295/19 (Apple v Pear Technologies), ECLI:EU:C:2019:805.

ORDER OF THE COURT (Eighth Chamber)

1 October 2019 (*)

(Appeal — Article 181 of the Rules of Procedure of the Court — EU trade mark — Opposition proceedings — Application for registration of the figurative mark containing the word element ‘pear’ — Earlier figurative mark depicting an apple — Relative ground for refusal — Regulation (EC) No 207/2009 — Article 8(5) — No similarity between the signs at issue — Appeal manifestly unfounded)

In Case C-295/19 P,

APPEAL under Article 56 of the Statute of the Court of Justice of the European Union, brought on 10 April 2019,

Apple Inc., established in Cupertino (United States), represented by G. Tritton and J. Muir Wood, Barristers, instructed by J. Olsen and P. Andreottola, Solicitors,

appellant,

The other parties to the proceedings being:

Pear Technologies Ltd, established in Macau (China),

applicant at first instance,

European Union Intellectual Property Office (EUIPO),

defendant at first instance,

THE COURT (Eighth Chamber),

composed of F. Biltgen (Rapporteur), President of the Chamber, C.G. Fernlund and L.S. Rossi, Judges,

Advocate General: E. Tanchev,

Registrar: A. Calot Escobar,

having decided, after hearing the Advocate General, to give a decision by reasoned order, in accordance with Article 181 of the Rules of Procedure of the Court,

makes the following

Order

1        By its appeal, Apple Inc. asks the Court of Justice to set aside the judgment of the General Court of the European Union of 31 January 2019, Pear Technologies v EUIPO — Apple (PEAR) (T-215/17, not published, ‘the judgment under appeal’, EU:T:2019:45), by which the General Court upheld the action of Pear Technologies Ltd for annulment of the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 January 2017 (Case R 860/2016-5) relating to opposition proceedings between Apple and Pear Technologies.

2        Those opposition proceedings were filed by Apple, proprietor of an earlier EU figurative mark in the shape of an apple, against Pear Technologies’ application for registration as an EU trade mark of a figurative sign in the shape of a pear accompanied by the word element ‘pear’.

3        In support of its appeal, the appellant relies on a single ground, alleging infringement of Article 8(5) of Council Regulation (EC) No 207/2009 of 26 February 2009 on the European Union trade mark (OJ 2009 L 78, p. 1), as amended by Regulation (EU) 2015/2424 of the European Parliament and of the Council of 16 December 2015 (OJ 2015 L 341, p. 21) (‘Regulation No 207/2009’).

 The appeal

4        Under Article 181 of its Rules of Procedure, where the appeal is, in whole or in part, manifestly inadmissible or manifestly unfounded, the Court may, at any time, acting on a proposal from the Judge-Rapporteur and after hearing the Advocate General, decide by reasoned order to dismiss that appeal in whole or in part.

5        That provision must be applied in the present case.

6        On 9 July 2019, the Advocate General took the following position:

‘1.      For the reasons set out below, I propose that the Court should dismiss the appeal in the present case as being manifestly unfounded, in accordance with Article 181 of its Rules of Procedure, and order the appellant to pay the costs, in accordance with Article 137 and Article 184(1) of the Rules of Procedure.

2.      The appellant relies on a single ground in support of its appeal, alleging infringement of Article 8(5) of Regulation [No 207/2009].

3.      I recall that, under the terms of Article 8(5) of Regulation No 207/2009, “upon opposition by the proprietor of a registered earlier trade mark within the meaning of paragraph 2, the trade mark applied for shall not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which it is applied are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier EU trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned, and where the use without due cause of the trade mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark” …

4.      As regards the first part of the single ground of appeal, the appellant complains, in essence, that the General Court infringed Article 8(5) of Regulation No 207/2009 in that it never examined, in actual fact, whether there was any similarity between the two marks at issue, and that it ruled out that there was any such similarity, and refused to apply that provision, based on an abstract analysis. According to the appellant, the legal question which the General Court ought to have addressed was whether the differences between those marks were sufficient to preclude any link being established between them by the relevant public, given the distinctive character and international reputation of the earlier mark and the high level of attention of the relevant public.

5.      In my view, that part of the single ground of appeal should be rejected, since the General Court concluded that the marks at issue are not similar and therefore annulled the decision of the Fifth Board of Appeal of the European Union Intellectual Property Office (EUIPO) of 18 January 2017 (Case R 860/2016-5) relating to opposition proceedings between Apple and Pear Technologies, which had found that there was a low degree of similarity at a visual and conceptual level, with the General Court doing so without examining the other parts of the single plea in the action.

6.      In that regard, it suffices to note that the General Court has adhered to the case-law of the Court of Justice, according to which the trade marks at issue must be identical or similar as a precondition for Article 8(5) of Regulation No 207/2009 to apply (see, to that effect, order of 27 October 2010, Guedes — Indústria e Comércio v OHIM, C-342/09 P, not published, EU:C:2010:639, paragraph 25), and the similarity must be sufficient for the relevant section of the public to establish a link between those marks (see, to that effect, judgment of 24 March 2011, Ferrero v OHIM, C-552/09 P, EU:C:2011:177, paragraphs 52 and 53).

7.      First, as the Court noted in paragraph 65 of the latter judgment, although the global assessment implies some interdependence between the relevant factors, and a low degree of similarity between the marks may, therefore, be offset by the strong distinctive character of the earlier mark (see, to that effect, judgment of 7 May 2009, Waterford Wedgwood v Assembled Investments (Proprietary), C-398/07 P, not published, EU:C:2009:288, paragraph 33), the fact remains that where there is no similarity between the earlier mark and the contested mark, the reputation of or the well-known nature attaching to the earlier mark and the fact that the goods or services respectively covered are identical or similar are not sufficient for it to be found that there is a likelihood of confusion between the marks at issue or that the relevant public makes a link between them (see, to that effect, judgment of 2 September 2010, Calvin Klein Trademark Trust v OHIM, C-254/09 P, EU:C:2010:488, paragraph 53 and the case-law cited).

8.      Secondly, as is apparent from paragraph 66 of the judgment of 24 March 2011, Ferrero v OHIM (C-552/09 P, EU:C:2011:177), referred to by the appellant itself, Article 8(5) of Regulation No 207/2009 is manifestly inapplicable where the General Court has ruled out any similarity between the marks at issue and it is only if there is some similarity, even faint, between those marks that the General Court must carry out a global assessment in order to ascertain whether, notwithstanding the low degree of similarity between those marks, there is, on account of the presence of other relevant factors such as the reputation or recognition enjoyed by the earlier mark, a link made between those marks by the relevant public.

9.      For the sake of completeness, it might be noted that, contrary to what the appellant claims, the General Court did in fact carry out a specific and detailed examination of the degree of similarity of the marks at issue, at both a visual level (paragraphs 24 to 54 of the judgment under appeal) and a conceptual level (paragraphs 55 to 79 of the judgment under appeal), taking into account the perception of those marks by the relevant public.

10.      Accordingly, the first part of the single ground of appeal must be rejected as being manifestly unfounded.

11.      In the second part of single ground of appeal, the appellant complains, in essence, that the General Court failed to take account of the services and goods in respect of which protection was sought when assessing the similarity of the two marks at issue. The appellant argues that when determining whether two figurative marks depicting an apple and a pear are similar at a conceptual level, such that the relevant public when confronted by the contested mark would call to mind the earlier mark, it is a statement of the obvious that the public would be much less likely to call to mind the earlier mark if both marks were used for fruits or fruit and vegetable delivery services, for instance, as opposed to electronic goods where an apple and pear cannot be said, in any way, to describe a characteristic of those goods.

12.      In arguing that the absence of a relationship between the marks at issue and the products and services covered by those marks is relevant to assessing whether those marks are conceptually similar, the appellant misconstrues the scope of the judgment of 24 March 2011, Ferrero v OHIM (C-552/09 P, EU:C:2011:177), rightly cited by the General Court in paragraph 60 of the judgment under appeal; in paragraph 58 of its judgment, the Court of Justice held that the distinctive character of the earlier mark constitutes a relevant factor not for the purposes of assessing whether the marks at issue are similar, but whether the relevant section of the public makes a link between them. Indeed, in paragraph 60 of the judgment under appeal, the General Court rejects the argument that ‘account should be taken … of the fact that there is no relationship between pears and apples and the goods and services covered by the conflicting marks’.

13.      It follows that the second part of the single ground of appeal must also be rejected as being manifestly unfounded.

14.      Lastly, as regards the third part of the single ground of appeal, the appellant complains that the General Court, in essence, first, failed to take into consideration the many characteristics shared by the marks at issue when assessing their conceptual similarity. Secondly, the appellant disputes the consideration given by the General Court to the actual depiction of those marks.

15.      I am of the view that the General Court has adhered to the case-law of the Court of Justice both in the context of its assessment and in support of its decision that there is no conceptual similarity between the marks at issue.

16.      In paragraph 71 of the judgment under appeal, the General Court made a correct assessment of the relevance of the elements in the context of the conceptual comparison of the marks, in line with the judgment of 11 November 1997, SABEL (C-251/95, EU:C:1997:528). In that regard, the General Court specified the context of that judgment, delivered in the context of a reference for a preliminary ruling, in which the Court of Justice did not rule on that question or make a comparison of the signs at issue in the case giving rise to that judgment, but rather relied on findings of the referring court that those signs were conceptually similar.

17.      Furthermore, the General Court noted that the conceptual similarity between the signs at issue in that case was based, according to the referring court, on the fact that both used the image of a ‘bounding feline’ and was not, therefore, based on the fact that the pumas and cheetahs at issue in that case shared several characteristics in real life.

18.      In my view, it suffices to note that the General Court correctly applied the case-law established by the judgment of 11 November 1997, SABEL (C-251/95, EU:C:1997:528), particularly in paragraph 24 of that judgment, as well as its own case-law, set out in paragraph 22 of the judgment under appeal, by relying on a comparison of the marks at issue based on an overall impression given by those marks.

19.      Moreover, as regards the manner in which the General Court took into account the actual depiction of the marks at issue, it should be added that the obligation to state reasons does not require the General Court to provide an account that follows exhaustively and one by one all the reasoning articulated by the parties to the case and the General Court’s reasoning may therefore be implicit, provided that it enables the persons concerned to know why the General Court has not upheld their arguments and provides the Court of Justice with sufficient material for it to exercise its power of review.

20.      That is so in the present case. Accordingly, the third part of the single ground of appeal must also be rejected as being manifestly unfounded.

21.      Accordingly, the single ground of appeal must, in my view, be rejected in its entirety as being manifestly unfounded.

22.      Since the single ground must be rejected, the appeal must be dismissed and the appellant ordered to pay the costs, in accordance with Article 137 and Article 184(1) of the Rules of Procedure.’

7        For the reasons given by the Advocate General, the appeal must be dismissed as being manifestly unfounded.

 Costs

 Under Article 137 of the Rules of Procedure of the Court, applicable to the procedure on appeal pursuant to Article 184(1) thereof, a decision as to costs is to be given in the order which closes the proceedings. Since the present order was adopted before the appeal was served on the other parties and, therefore, before they could have incurred costs, Apple must be ordered to bear its own costs.

On those grounds, the Court (Eighth Chamber) hereby orders:

1.      The appeal is dismissed as being manifestly unfounded.

2.      Apple Inc. shall bear its own costs.

Luxembourg, 1 October 2019.

A. Calot Escobar

F. Biltgen

Registrar

      President of the Eighth Chamber

*      Language of the case: English.